From Venice with Love and Litigation: The Cipriani Brand Dispute

By Abishiv Kanagaratnam

When the holiday season arrives, it prompts the need for travel plans and relaxation. Accommodation is a vital aspect of holiday travel, and the focus is often concentrated on finding aesthetically pleasing and memorable hotels. However, in the competitive tourism industry, as hotels strive for excellence, it can lead to unintentional or intentional replication of services. To protect against imitation and infringement of trademark rights, businesses prioritize trademark registration to secure their rights. Despite efforts to prevent it, competitors still attempt to register confusingly similar marks, resulting in trademark opposition by the original owner. In the hotel management sector, attempts to register identical and/or confusingly similar trademarks are a notable concern.

Further to trademark opposition, the case of Altunis Trading v Hotel Cipriani S.P.A. in Singapore provides additional insights into what happens when a founder of a well-known brand sells or divests interests in that brand to another company.

Hotel Cipriani (the Opponent), renowned for Belmond Hotel Cipriani in Italy since 1958, opposed Altunis Trading’s (the Applicant) trademark application for “CIPRIANI” and a bartender device in Singapore i.e. . Despite lacking trademark registrations in Singapore, the Opponent invoked sections 8(7)(a), 8(4)(b)(i), and 7(6) of the Trademarks Act 2005 for their opposition.

Dispute Background

The dispute traces back to 1967 when Mr. Cipriani, the developer of the iconic Hotel Cipriani in Venice, Italy, divested his shares in the hotel. This action set the stage for a dispute over a 1967 Agreement on the use of the “CIPRIANI” name when Altunis Trading, a member of the Cipriani family’s business empire, sought to register a mark that prominently featured the “CIPRIANI” name. This triggers the Opponent’s opposition based on Sections 8(7)(a) on the grounds of passing off, 8(4)(b)(i) on the grounds that the Opponent’s mark is well-known and 7(6) on the grounds of bad faith. The Opponent argued the protection of unregistered rights in “HOTEL CIPRIANI” and “CIPRIANI,” while Altunis contested passing off claims.

The Hearing Registrar found that in respect of passing off under Section 8(7)(a), elements of goodwill, misrepresentation, and damage were made out. The Opponent demonstrated goodwill through evidence of sales and global advertising targeting a specific range of potential wealthy high-end customers and this was sufficient in establishing a connection to Singapore. The Hearing Registrar decided in favour of the Opponent on this ground, finding all three elements, including misrepresentation due to the distinctive nature of “HOTEL CIPRIANI” and “CIPRIANI” and potential damage through business diversion.

The second ground that was relied on by the Opponent is Section 8(4)(b)(i) which prohibits registration if it conflicts with an earlier well-known trademark. The Opponent was required to establish the well-known status of its “CIPRIANI” and “HOTEL CIPRIANI” marks, similarity, connection indication, and likely damage. The analysis paralleled Section 8(7)(a), reinforcing the Opponent’s case based on the distinctive word marks’ well-known status.

The Opponent’s final ground falls under Section 7(6) which deals with bad faith, examining actual dishonesty and commercially unacceptable dealings. The Opponent argued a breach of the 1967 Agreement and alleged prior knowledge of the Applicant. Altunis justified their application as a legitimate expansion.

The Prior Use Argument

The Opponent contended that, despite the absence of registration, there was proof of the usage of “HOTEL CIPRIANI” and “CIPRIANI” in Singapore. They argued that the Applicant, given their longstanding relationship, should have been aware of the usage or conducted a search. Additionally, they claimed a lack of proper evidence demonstrating the Applicant’s mark usage in Singapore. The Opponent further suggested that the Applicant, with extensive business experience, might have sought a commercial advantage from them through the application of the mark.

However, the Hearing Registrar deemed the Opponent’s argument, based on the premise of having customers in Singapore first, insufficient to establish bad faith in the Applicant’s mark application. The Hearing Registrar concluded that the test for bad faith is both objective and subjective, and in this case, both elements were not satisfied.

Upon examining the 1967 Agreement, the Hearing Registrar concluded that there was no prohibition against the Applicant registering its mark in Singapore. This was especially evident considering the judgment in the Hotel Cipriani UKHC case, which had previously been litigated in the United Kingdom. In that case, Justice Arnold declined to find that the relevant clause governing the 1967 Agreement prohibited the Applicant from registering the “CIPRIANI” marks. He noted that the clause only prohibited the use of the mark, but not its registration. Moreover, the Applicant sought to protect a sign associated with its connections to Harry’s Bar and its broader business by applying to register its mark. The Hearing Registrar noted that the name “CIPRIANI” had familial connections with the Applicant and the Cipriani group.

The Hearing Registrar considered the long-running dispute between the Opponent and the Applicant, with decisions going both ways. He failed to find dishonest or commercially unacceptable conduct in the Applicant’s mark application, asserting that they adhered to proper standards. The Hearing Registrar affirmed the acceptability of expanding one’s business in Singapore and concluded that there was nothing inherently wrong with the Applicant’s actions. Consequently, the Hearing Registrar determined that the bad faith element could not be satisfied.

The Hearing Registrar’s comprehensive analysis covered passing off, protection of well-known trademarks, and issues of bad faith. The central point of contention was the interpretation of the 1967 Agreement, highlighting the intricate nature of disputes in protecting intellectual property rights.

Conclusion

In conclusion, the Opponent prevailed in asserting two out of the three grounds of the opposition. The Hearing Registrar ruled in favour of the Opponent under Sections 8(7)(a) and 8(4)(b)(i), which pertain to the tort of passing off and well-known trademarks, respectively. However, the Opponent’s claim under Section 7(6), relating to bad faith, did not succeed. As a result, the Applicant’s mark was not permitted to proceed for registration.

This case of Altunis Trading v Hotel Cipriani S.P.A. exemplifies the intricacies when rights in a trademark are sold off to another entity resulting in disputes between the new owner of the marks and the previous owner and/ or beneficiaries of the previous owner. Therefore, the issues on ownership, restrictions and rights of respective parties should be made clear in the relevant agreement.

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.